Israel and the Patent Prosecution Highway

The Israel Patent Office held a seminar yesterday, October 17th 2012, on the patent prosecution highway PPH. Some 150 people, most of whom were not Patent Office employees, attended.

The first speaker, Charles Allushway from the US, spoke at length about how the PPH came about, and how it evolved over time. The presenter was good, but the material was neither practical nor interesting, and the airconditioning wasn’t working well. I’d prefer not to comment about the content, as it may become apparent that I slept through most of his talk. After a coffee break, Gershon Yachnowitz, an Israel examiner described the pilot plan, and how Israel is linked up with various other patent offices in PPH agreements.

The logic for the PPH is to avoid duplicated work being performed by different patent offices. Avoiding duplication is expected to shorten pendency times prior to examination and to increase certainty.

Unfortunately, in practice this is not the case. It turns out that in practice, despite a lot of hype, in the 15 months since the PH between Israel and the US has been in existence, only three Israel applications have been accelerated as a result of an issued US patent using the PPH mechanism. Only seven US patent applications have been accelerated as a result of the Israel patent having issued. One has reduced opportunities to amend the claims under the PPH. If the Examiner finds additional art, using the PPH may be counterproductive.

The PPH seems rather unneccessary. One does not pay fees for pending applications in Israel or the US. One only pays renewals once patents issue. There is no real hurry to incur prosecution costs or renewal fees. One only needs an issued patent when one wants to enforce ones rights locally. Very few patents are enforced in Israel or in the US. Where one enforces, there is a high likelihood of the presumption of validity to be overcome by the defendant finding additional art. This state of affairs is best avoided by having one’s application examined substantively by as many patent offices as possible without short cuts to allowance. Of the issued patents that are enforced in Israel, the majority are for pharmaceuticals. Here, the delay in being able to bring a product to market is caused by the need for regulatory approval not examination of the patent.

If one actually needs an issued patent, one presumably has good grounds for requesting accelerated examination based on those grounds.

In Israel and in the US, there are duties of disclosure of prior art of relevance. That which the Examiner elsewhere has found is made of record anyway. Where an examiner issues a similar rejection to one issued previously elsewhere that was overcome, the applicant will use similar arguments as they are already available. Furthermore, applicants will not file different arguments to avoid creating file wrapper estoppel. What the PPH does is put the inability of an examiner to find additional relevant art on record, but so what? This is far from being a guarantee that such art does not exist.

It seems that since the USPTO was not taking the International Search Report of the PCT too seriously, the Patent Prosecution Highway, PPH, was an attempt by the United States to bypass the PCT with binational agreements, somewhat like how the US railroaded the TRIPS mechanism through the WTO, also bypassing WIPO. Instead of a single, straightforward mechanism that all countries can join, the PPH has created a plethora of binational agreements. Some of these allow acceleration based on a PCT or Paris conventional filing, others, presumably where one party are more pro PCT, only allow accelerated examination where the second filing is a regular Paris Convention filing.

For some reason not clear to me, one cannot use the PPH to accelerate examination once one country has examined, unless the country that has examined the patent is the country where the application was first filed.

The backlogs in the US are caused by there being too few examiners and by Examiners issuing poor office actions. Recently, the USPTO has become more difficult to obtain patents at. This is a matter of policy. The PPH won’t change that.

In Israel, we have a plethora of examiners as we need 100 to be an international search authority for the PCT. There are currently not enough applications being filed in Israel to keep backlogs at historic lengths, so pendency periods are dropping. Once a patent comes up for examination, if it has already been allowed elsewhere, one can request modified examination under Section 17c of the Israel Law. This further shrinks the need for the PPH.

Where Israel has PPH type relationships with other countries whose examinations are not considered acceptable quality for modified examination under Section 17c, it is unlikely that an issued patent from there will significantly speed up examination of the corresponding application in Israel, although it could result in a Notice Prior to Examination issuing more quickly.

Using the PPH requires additional work by the attorney of record and will presumably incur additional fees. At present, it would appear that the amendment to the Israel Law to allow acceleration under the PPH will incur an official fee as well.

My feeling is that each bilateral agreement enables civil servants and politicians a photo-opportunity, and foreign travel as a VIP. There is presumably a fair amount of not inexpensive negotiation behind the scenes as well, at the Examiner level, the commissioner of patent level and the political level. The resources spent could be better employed to employ additional examiners or to increase salaries to examiners to make the public sector employment as an examiner more attractive. Such steps will make a real difference to backlogs and examination quality.

I think the PPH is a little like the Israel-Palestinian Roadmap. Good for PR by politicians and a triumph of diplomacy, but It doesn’t affect the picture on the ground.

There is a three lane highway connecting patent offices. There are no clear junctions for entering and exiting, poor road signs and I am not even sure what side of the road one drives on. I suspect that many of my professional colleagues feel the same way, thus the attendance of the seminar was impressive.

Finally, we expect that like all previous attempts to fast track examination, once applicants start using the PPH it will become gridlocked.

On the bright side, coupled with the US becoming a first to file jurisdiction, it does seem that fiing in Israel and declaring intention to then file abroad could be used to accelerate examination in Israel. Once an Israel application issues, there is no longer a duty of disclosure in Israel. The Issued Israel patent could be used to reduce pre-examination pendency in the US and elsewhere. This may be of interest to those who require issued US patents for fund-raising and trade purposes.